United States District Court, N.D. California
ORDER GRANTING SAMSUNG LEAVE TO AMEND INFRINGEMENT
CONTENTIONS RE: DKT. NO. 116
William H. Orrick United States District Judge
Samsung Electronics Co., Ltd. and Samsung Electronics
America, Inc. (collectively, “Samsung”) seek to
amend their infringement contentions to (1) include
additional infringing instrumentalities and (2) change the
conception dates with respect to Samsung's U.S. Patent
Number 8, 228, 827 (“'827 Patent”) and RE44,
105 (“'105 Patent”). Counterclaim-defendants
Huawei Technologies Co., Ltd., Huawei Device USA, Inc.,
Huawei Technologies USA, Inc. and HiSilicon Technologies Co.
Ltd. (collectively, “Huawei”) do not oppose the
first request, but contend that Samsung's second request
should be denied because Samsung has not been diligent and
Huawei will be prejudiced if Samsung is permitted to amend
the conception dates at this time. Because Samsung has been
at least marginally diligent and I do not see prejudice to
Huawei, Samsung's motion to amend the conception dates is
initiated this action on May 24, 2016; Samsung answered and
filed counterclaims on August 22, 2016. See Compl.
(Dkt. No. 1); Answer, Third Party Complaint, and
Counterclaims (Dkt. No. 42[redacted], Dkt. No. 41-3[under
October 25, 2016, Samsung served its infringement contentions
and document productions as dictated by Patent Local Rules
3-1 and 3-2. Lordgooei Decl. ¶ 2 (Dkt. No. 116-1);
see Samsung's Disclosure of Asserted Claims and
Infringement Contentions (Id., Ex. 1, Dkt. No.
116-2; Huawei's Partial Opp'n to Samsung's Mot.
(“Opp'n”), Ex. A, Dkt. No.
120-3). But it did not identify specific
conceptions dates for four of Samsung's nine asserted
patents, including the '827 and '105 patents.
See Samsung's Disclosure at 8. Rather, it
disclosed priority dates of “at least” February
9, 2007 for the '827 patent and “at least”
April 6, 2005 for the '105 patent. Id.
November 7, 2016, Huawei wrote to Samsung to address
deficiencies in its contentions, including Samsung's
failure to identify specific dates of conception for each
asserted patent. 11/7/16 Letter to Samsung (Opp'n, Ex. B,
Dkt. No. 120-3). It specifically requested confirmation that
Samsung would not rely on any conception dates earlier than
the priority dates disclosed. Id. at 1. Samsung did
not immediately respond and Huawei sent another letter on
November 30, 2016. 11/30/16 Letter to Samsung (Opp'n, Ex.
C, Dkt. No. 120-3; Lordgooei Decl., Ex. 2, Dkt. No. 116-3).
Samsung responded on December 2, 2016, disputing that it was
required to identify specific conception dates (as opposed to
priority dates), but providing supplemental infringement
contentions that identified additional conception dates
“in an effort to resolve potential disputes between the
parties[.]” 12/2/16 Letter to Huawei (Opp'n, Ex. D,
Dkt. No. 120-3); see Samsung's First
Supplemental Disclosure of Asserted Claims and Infringement
Contentions (Opp'n, Ex. E, Dkt. No. 120-3; Lordgooei
Decl., Ex. 3, Dkt. No. 116-4). It also stated its
understanding that “neither party will be required to
seek leave to amend their respective infringement
contentions” and “reserve[d] the right to update
these dates as additional information becomes
available.” 12/2/16 Letter to Huawei. Samsung
identified “April 6, 2005” as the conception date
for the '105 patent and “January 2007” as the
conception date for the '827 patent. Samsung's First
Supp. Infr. Contentions at 8. Huawei accepted the conception
date for the '105 patent, but notified Samsung that it
had to identify a specific date, not just a month and year,
for the '827 patent. 12/15/16 Letter to Samsung
(Opp'n, Ex. F, Dkt. No. 120-3). It also disputed
Samsung's contention that it could amend without seeking
leave because “Huawei is relying on these dates to
develop invalidity contentions[, ]” and “[a]ny
changes could negatively impact Huawei's ability to put
forth an invalidity defense.” Id.
Samsung continued to disagree that the Patent Local Rules
required disclosure of a specific date, it amended its
conception date for the '827 patent to “January 26,
2007.” 1/10/17 Letter to Huawei (Opp'n, Ex. G, Dkt.
No. 120-3; Lordgooei Decl., Ex. 4, Dkt. No. 116-5). Ten days
later on January 20, 2017, the parties exchanged invalidity
contentions and accompanying document productions. Huawei
contended that Samsung was not entitled to a priority date of
February 2007 for the '827 asserted claims, nor a
priority date of April 2005 for the '105 asserted claims.
Huawei's Invalidity Contentions at 90 (Opp'n, Ex. H,
Dkt. No. 120-3; Lodgooei Decl., Ex. 6, Dkt. No. 116-7). For
the '827 patent, Huawei disclosed allegedly invalidating
prior art that it claims was available as early as December
2005 and as late as January 5, 2010. Id. at 27;
see Samsung's Mot. to Amend Infr. Contentions at
3 (“Mot.”)(Dkt. No. 116). And for the '105 patent,
Huawei disclosed allegedly invalidating prior art that it
claims was available as early as 1999, and as late as June 8,
2009. Huawei's Invalidity Contentions at 32-33;
see Mot. at 3. According to Huawei, it relied upon
the conception dates provided by Samsung to locate key prior
art references. See Opp'n at 4 (citing to
Huawei's Invalidity Contentions).
January 12 and February 14, Samsung identified documents
supporting a conception date of January 22, 2007 for the
'827 patent, and March 30, 2005 for the '105
patent. Lordgooei Decl. ¶ 3. Samsung produced
the responsive, non-privileged information on February 14,
next day, Samsung sent Huawei an email with proposed second
supplemental infringement contentions attached. 2/15/17 Email
to Huawei with Supplemental Infringement Contentions
Attachment (Opp'n, Ex. I, Dkt. No. 120-3). The
supplemental contentions identified additional infringing
products based on Huawei's supplemental interrogatory
responses, and proposed changes to two conception dates: from
January 26 to January 22, 2007 for the '827 patent, and
from April 6 to March 30, 2005 for the '105 patent.
Id. Huawei responded that it did not oppose
Samsung's revisions to the list of accused products but
did oppose the revisions to its claimed conception dates.
2/22/17 Email to Samsung (Opp'n, Ex. J, Dkt. No. 120-3;
Lordgooei Decl., Ex. 9, Dkt. No. 116-10). Samsung then
requested a meet and confer and, as a compromise, proposed a
stipulation to grant Samsung leave to serve disclosures with
the revised conception dates and allow Huawei 30 days to
respond to identify any additional prior art pre-dating the
new conception dates. 2/27/17 Email to Huawei (Lordgooei
Decl., Ex. 10, Dkt. No. 116-11).
the meet and confer, Huawei requested that Samsung identify
the documents supporting its revised conception dates. 3/8/17
Email to Samsung (Opp'n, Ex. K, Dkt. No. 120-3; Lordgooei
Decl., Ex. 11, Dkt. No. 116-12). For the '827 patent,
Samsung identified a document it had produced on February 14,
2017, and for the '105 patent, Samsung cited a draft
privilege log entry. See Opp'n, Ex. L, Dkt. No.
120-3. After reviewing the documents, Huawei maintained its
objection to Samsung's motion for leave to amend its
conception dates. On March 13, 2017, Samsung filed its
motion. Dkt. No. 116.
to the Patent Local Rules for the Northern District of
California, a party claiming infringement must submit
infringement contentions within fourteen days of the
parties' initial Case Management Conference. Patent L.R.
3-1. These must include, among other things, “each
accused apparatus, product, device, process, method, act, or
other instrumentality (‘Accused Instrumentality')
of each opposing party of which the party is aware, ”
and must “be as specific as possible.” Patent
L.R. 3-1(b). Rule 3-1(f) requires parties to provide,
“[f]or any patent that claims priority to an earlier
application, the priority date to which each asserted claim
allegedly is entitled.”
Local Rule 3-2 governs “Document Production
Accompanying Disclosure, ” which must accompany the
Rule 3-1 disclosures. This must contain documents that relate
to the sale or other use of the claimed invention, as well as
“[a]ll documents evidencing the conception, reduction
to practice, design, and development of each claimed
invention, which were created on or before the date of
application for the patent in suit or the priority date
identified pursuant to Patent L.R. 3-1(f), whichever is
earlier.” Patent L.R. 3-2(a)-(b). A defendant must
serve invalidity contentions and document production no later
than 45 days after it is served with the infringement
contentions. Patent L.R. 3-3, 3-4.
court may allow a party to amend its infringement contentions
only “upon a timely showing of good cause.”
Patent L.R. 3-6. The Patent Local Rules supply several
circumstances that support a finding of good cause, provided
there is no prejudice to the non-moving party. Id.
These include “[a] claim construction by the Court
different from that proposed by the party seeking amendment,
” and “[r]ecent discovery of nonpublic
information about the Accused Instrumentality which was not
discovered, despite diligent efforts, before the service of
the Infringement Contentions.” Id.
patent local rules were designed to require parties to
crystallize their theories of infringement early in
litigation, and to adhere to such theories. Apple Inc. v.
Samsung Elecs. Co., No. 12-CV-0630-LHK PSG, 2013 WL
3246094, at *1 (N.D. Cal. June 26, 2013). In determining
whether a party has good cause to amend, courts will first
look to see whether the moving party has good cause, which
requires that it act with diligence, and then to whether the
non-moving party will suffer prejudice. Id. The
focus of this inquiry is on the moving party's reasons
for seeking amendment. Id. The moving party bears